Last week came news that ICANN would likely refuse
amazon.com’s application for the top level domain .amazon because Amazon is a
geographical region first and foremost (more on the topic here and here). Now, two more geographical locations are impacting IP
The first involves the US city of Boston, which is one of the oldest cities in the US, having been founded in 1630. Situated on the Charles River, Boston is the site of Boston Tea Party, and home to the first US public school, first US transit system, Harvard University, the Boston Pops, numerous top-ranked sports teams [please don't name all of them, pleads Merpel], and the elite Boston Marathon, all of which give Bostonians reason to be proud.
|One of many users of the sun image|
Sun Valley Company lodged a complaint with Twitter claiming that Barshack was infringing on its trade marks by using the @SunValley handle and the smiling sun logo. According to Barshack’s complaint, Twitter failed to provide him with an opportunity to respond to Sun Valley Company’s complaint; instead, and in contradiction with Twitter's Trademark Policy, which states that a user would be given an opportunity to respond to any infringment claims, Twitter immediately suspended Barshack’s account and assigned the @SunValley account to Sun Valley Company. Barshack also alleges that Twitter failed to respond to Barchack’s demands to restore the Twitter feed to him upon his submission of information confirming that, with respect to the claim over the word mark Sun Valley, SunValley was the name of a location and not exclusively owned or used by Sun Valley Company. In addition, Barshack submitted USPTO records showing that a Sun Valley Company trade mark for a smiling sun logo was abandoned, perhaps because numerous businesses in the Sun Valley area used nearly identical smiling sun images in their logos and product designs.
Twitter's Trademark Policy states that it will suspend a user's account if there is "a clear intent to mislead others through the unauthorized use of a trademark." As Barshack points out in his complaint, filed in a federal District Court in Idaho, his use of @SunValley doesn't constitute use of the Sun Valley Company's trade mark, given that Sun Valley is the name of the town, and is also used by many other businesses, like Sun Valley Cleaners, that operate in Sun Valley, Idaho. He also explains that he did not exhibit a clear intent to mislead anyone as to any connection between himself and Sun Valley Company, despite periodically Tweeting about skiing at the ski resort. [Snorts Merpel, wouldn't any cat who lives at the base of a mountain ski and Tweet?]
This Kat thinks Barshack's point is well taken that Sun Valley Company can't truly claim exclusive use over a town's name, except for the limited right to use the name within the company's established trade marks. Sun Valley Company apparently abandoned its trade mark registration of the stand-alone smiling sun drawing (though it retains a trade mark registration for a smiling sun appearing above the words Sun Valley, at left), perhaps because of the widespread use among local businesses. Even if Sun Valley Company was the creator of the sun image, the mark has been diluted by the allowed use by others. Indeed, the smiling sun seems to have become a mascot of sorts for the area of Sun Valley, Idaho.
Regardless of the outcome of Barshack's lawsuit, perhaps this is a good reminder to businesses that use a geographic location as part of their trademark: don't expect to have sole use of the name, or be ready to face challengers. It is also a reminder to Twitter and other social media service providers to adhere to the procedures established within their policies when responding to IP claims from users.